The Free Speech Coalition is trying to rally its supporters into a legal nastygram campaign against ICM Registry ahead of the launch of .xxx next month.

The California-based porn trade group wants webmasters to inform ICM that if it sells their trademarks as .xxx domains, they may sue.

It’s released a template letter (pdf) for members to use. It reads, in part:

ICM is now on notice that the registration of any domain name using the .XXX extension that is identical or confusingly similar to one of the trademarks or domains listed on Exhibit A will violate (COMPANY NAME)’s intellectual property rights and constitute an unfair business practice. ICM must take steps to prevent such activity before it can occur. Failure to take affirmative steps to prevent this conduct will establish ICM’s substantial liability.

The FSC believes that because .xxx is squarely aimed at porn webmasters, it smells like a shakedown a lot more than a more generic-sounding string would.

Its tactics are interesting – encouraging others to issue legal threats instead of doing it itself.

As I’ve previously noted, top-level domain registries based in the US have a pretty good legal defense against cybersquatting suits under the Anticybersquatting Consumer Protection Act.

Whether those defenses extend to claims of trademark infringement is a different matter. As far as I know, a sponsored gTLD manager has never been sued on these grounds.

The .xxx gTLD is of course one of the most cybersquatting-unfriendly namespaces ever, in terms of the number and strength of its trademark protection mechanisms.

Comments (10)

.xxx is a sponsored Top Level Domain, not a gTLD. This distinction is central to the legal argument, and it renders comparisons between .xxx and gTLDs (.net, .org,) useless.

I can open Chevron Trophies and Awards, but not Chevron Gas. I can open McDonalds Plumbing, but not McDonalds Hamburgers.

In this case, the argument goes, I can open Hustler Courier Service, but Hustler.xxx would inherently be a violation of Hustler’s mark.

I understand that, in their off time, many domainers like to sit at their keyboards and pretend to be lawyers, but the validity of this distinction will be argued by real attorneys and decided by a real judge in a real courtroom.

My suggestion is to sit back and enjoy the ride. It’s about to get interesting.

The distinction between a sTLD and a gTLD may be a “illusory distinction” in the internet world, but the legal world seldom says, “oh geez. Let’s not define that. it’s illusory.”

Quite the opposite. This distinction–the fact that this TLD is restricted to one industry providing one class of goods and services–is the very heart of the legal argument. It determines use, and “use” is central to arguing violation of a mark.

If you tried to open McDonalds Plumbing, under US trademark law, McDonalds Restaurants could sue you for trademark dilution. Even though you’re offering plumbing services, your mark may impede the power of McDonalds’ famous mark for restaurant services. Note that these grounds are available only to the most famous mark owners. (You may, of course, have robust defences, including McDonald being your own name.)

You’re right, Ann, that these issues may ultimately be decided by a courtroom.

Adam anyone can sue you for anything. The fact is that it would be perfectly legal and readily defensible to trademark mcdonalds plumbing and the burger guy would have absolutely no hope of squashing such non competitive use

Ann: this TLD is restricted to one industry providing one class of goods and services–is the very heart of the legal argument. It determines use, and “use” is central to arguing violation of a mark.

Great point except that tlds are global and trademarks are regional thereby giving rise to the possibility that more than one entity may have an interest in a trademarked term. Just because one has a tm in the US the mark does not entitle them to global protection. The notion of their being a list of protectable names as provided by the coalition is laughable. The ICM owns the extension and any domain names within it and they can do with them what they please. No flakty preemtive strategy such as the one suggested by the coalition will work. XXX can do what they want with the names that they own. These guys are spending 15 million on marketing in the first year. With a budget like that I am sure they have some $ set aside to straighten out over zealous US tm holders who somehow have come to believe that their US marks entitle them to global protection.

I’ve said before and I’ll say it again that I find it astounding that a group of people who seem to want to STOP expression on the internet (I was picketed by the soi-disant “Free Speech” mob in SF) can unselfconsciously claim to be promoting free speech.

The First Amendement and Article 10. of the European Human Rights Convention enshrine the right to free speech in our legal systems.

And again, as I’ve said before, the way this works is that there is a presumption that speech is allowed, and in order to restrict it, within a margin of appreciation that takes into account national differences, the restriction must be lawful, necessary in a democratic society, and proportionate.

Stopping someone using someone else’s trademark can sometimes be justified. And sometimes it can’t.

It seems to me that the ICANN system is already weighted too heavily against First Amendment rights and in favour of intellectual property interests (which must ALSO be protected).